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`STATES PATENT AND TRADEMARK OFFICE
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`Trial No.:
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`IPR 2013-00083
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`In re:
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`U.S. Patent No. 6,415,280
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`Patent Owners:
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`PersonalWeb Technologies, LLC & Level 3 Communications
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`Petitioner:
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`EMC Corporation & VMware, Inc.
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`Inventors:
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`David A. Farber and Ronald D. Lachman
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`For:
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`IDENTIFYING AND REQUESTING DATA IN NETWORK USING
`IDENTIFIERS WHICH ARE BASED ON CONTENTS OF DATA
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`October 8, 2013
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`PATENT OWNER’S OBJECTIONS TO DOCUMENTS/EVIDENCE
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`PURSUANT TO 37 C.F.R. § 42.64gbgg1g
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`Pursuant to 37 C.F.R. § 42.64(b)(l) and the Board’s Order dated September
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`3, 2013, patent owner PersonalWeb Technologies, LLC objects to the
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`documents/evidence identified below that were submitted by petitioner(s) on reply
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`and/or that were prior—f1led supplemental evidence relied upon by petitioner on
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`reply, for the following reasons:
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`1. The statements in the Reply Declaration of Douglas W. Clark (labeled
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`EX. 1078), at paragraphs 7 and 13, that rely upon and/or cite to the
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`claims (columns 22-24) of Woodhill (Ex. 1005) are objected to as
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`irrelevant, prejudicial, confusing, lacking foundation, and beyond the
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`1
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`Patent Owner‘s Objections to Evidence/Documents
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`IPR 20l3-00083 (US 6,415,280)
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`scope of this IPR. The relied—upon subject matter in the claims of
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`Woodhill is not “prior art” to the ‘79l patent and has not been shown to
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`be “prior art” to the ‘79l patent. See e. g., Federal Rules of Evidence
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`(FRE) 401, 402, 403, 702, 703. Woodhill was “filed” before April ll,
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`1995 (the effective filing date of the ‘79l patent), but was not published
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`until after April ll, 1995. Any material added to Woodhill after April
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`ll, 1. 995 (eg, including the information in the claims of Woodhill
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`which Dr. Clark cites to and now relies upon, such as the “name”
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`recitations in the claims of Woodhill in connection with binary object
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`identifier) cannot be relied upon herein and is not prior art. A copy of
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`Woodhill’s file history was previously provided to evidence the content
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`in Woodhill that can be relied on in this IPR under Section l02(e). (Ex.
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`2007.)
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`2. The statements in the Reply Declaration of Douglas W. Clark at
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`paragraph 10 that rely upon and/or cite to Langer or Ex. 1079 are
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`objected to as irrelevant, prejudicial, confusing, lacking foundation, and
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`beyond the scope of this IPR. See e.g., Federal Rules of Evidence (FRE)
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`401, 402, 403. This IPR was instituted based on Woodhill. This IPR
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`was not instituted in any respect on Langer or Ex. l079, and reliance on
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`these exhibits is outside the scope of this IPR and impermissible for the
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`reasons explained above. Moreover, Petitioner’s Reply may only
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`Patent Owner’s Objections to Evidence/Documents
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`IPR 2013-00083 (US 6,415,280)
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`respond to arguments raised in Patent Owner’s Response, and new
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`evidence relating to Langer is improper. See e.g., Office Patent Trial
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`Practice Guide, Vol. 77, No. 157, pg. 48767 at 1 (Aug. 14, 2012); and 37
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`CFR § 42.23(b).
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`3. The following statements in the Reply Declaration of Douglas W. Clark
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`(labeled EX. 1078) are objected to as contradicting his prior testimony:
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`paragraph 7, last sentence; page 8, line 7 to page 9, line 6; page 11, lines
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`4-7; and page 12, line 6 to page 13, line 3. Petitioner cannot rely on a
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`new declaration that contradicts prior deposition and/or declaration
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`testimony. See for example the reasons discussed in the following cases.
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`Bickerstaffv. Vassar College, 196 F.3d 435, 455 (2d Cir. N.Y. 1999);
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`Kavowras v. N. Y. Times Co., 132 Fed. Appx. 381, 383 (2d Cir. 2005);
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`Golden v. Merrill Lynch & Co, 2007 U.S. Dist. LEXIS 90106, at *23-24
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`(S.D.N.Y. Dec. 6, 2007); Ramos v. Baldor Specialty Foods, Inc., 2011
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`U.S. Dist. LEXIS 66631 (S.D.N.Y. June 16, 2011); Brown v.
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`Henderson, 257 F.3d 246, 252 (2d Cir. 2001); Durant v. A.C.S. State &
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`Local Solutions, Inc, 460 F. Supp. 2d 492, 494-95, 498 (S.D.N.Y.
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`2006); Mitchell v. Washingtonville Cent. Sch. Dist, 992 F. Supp. 395,
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`409-10 (S.D.N.Y. 1998), ajfd, 190 F.3d 1 (2d Cir. 1999); and Bunting v.
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`Nagy, 452 F. Supp. 2d 447, 460 (S.D.N.Y. 2006). For example and
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`Patent Owner’s Objections to Evidence/Documents
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`IPR 2013-00083 (US 6,415,280)
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`without limitation, see Clarl<’s prior deposition from July 2013 at pages
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`l67-68, l72~73, 227.
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`Respectfully submitted,
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`NIXON & VANDERHYE P.C.
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`By:
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`/Joseph A. Rhoa/
`Joseph A. Rhoa
`Reg. No. 37,515
`Updeep (Mickey) S. Gill
`Reg. No. 37,334
`Counsel for Patent Owner PersonalWeb
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`JAR:caj
`Nixon & Vanderhye, PC
`901 North Glebe Road, llth Floor
`Arlington, VA 22203—l808
`Telephone: (703) 816-4000
`Facsimile: (703) 816-4100
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`Patent Owner’s Objections to Evidence/Documents
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`IPR 2013-00083 (US 6,415,280)
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`CERTIFICATE OF SERVICE
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`I hereby certify service of the foregoing Patent Owner’s Objections to
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`Documents/Evidence Pursuant to 37 C.F.R. § 42.64(b)(l) to the following counsel
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`for petitioner on October 8, 2013 via email (pursuant to agreement between the
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`parties):
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`Peter M. Dichiara
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`WilmerHale
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`60 State Street
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`Boston, MA 02109
`(peter.dichiara@wi1merhale.com)
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`By:
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`/Joseph A. Rhoa/
`Joseph A. Rhoa
`Reg. No. 37,515
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`2020057